Names are important to businesses.  It is from a name that we derive a brand and therefore it is important to distinguish your company’s name within your industry.  Trademarks help in this process.  The underlying purpose of a Trademark is to prevent confusion among consumers in any given marketplace between goods and services.  If there are two companies with similar names operating in the same market and doing similar things, then the the consumer has a high likelihood of being confused. The following guide lays out how to trademark your company’s name.

A Trademark is going to run you $280 – $ 330 in filing fees alone, so early on you will need to make a determination of whether you need a Trademark right away.

1.  Trademark Search

  • What is it? When picking your company name you should always do a thorough internet and trademark search.  The last thing you want is your own company’s name to infringe upon another trademark.
  • When to do? Always.
  • What do to?  Believe it or not, law firms will charge $1000 for a comprehensive trademark search.  Even LegalZoom will charge you $500. We prefer Markify, a FREE automated trademark search service (see below).  You are looking for three main factors in your search: 1) the name, 2) the industry (also called the industry class), and 3) the goods and service description.  The more your name shares similarities among these three factors with another trademarked name, the higher likelihood that some trademark infringement exists – but it is not an exact science.
Trademark Search & Monitoring Markify

2.  First Trademark Application (Online USPTO Website)

  • What is it? It is usually in a company’s best interest to file multiple trademarks for a single name.  This allows them to capture their company’s growing portfolio of goods and services and gain protection in related industries.  Some companies maintain hundreds of trademarks. As a bootstrapping startup or small business, you will most likely be OK with just one.   The online US Patent and Trademark Office trademark application allows you to complete your trademark application online and pay electronically.
  • When to do? Always.
  • What do to? Your biggest challenges when filing out a Trademark application are deciding on the industry class under which you want the trademark filled (See USPTO Class List and Descriptions) and choosing the goods and services description which describes what your company is going to do.  Goods and service descriptions can range from a single sentence to exhaustive paragraphs.  A good starting place is to see what your competitors used for their first Trademark goods and services descriptions.  The USPTO also provides a list of “Acceptable Industry Class Identification and Goods & Services Descriptions” which you can choose from to make this process easier.  If you decide to write your own description, it will cost you an extra $50.  There is a growing camp of attorneys who believe that the risk associated with choosing a USPTO approved description is minmal – and that once the company is starting to make money they can file more trademarks to be more inclusive.  Once you submit and pay for your Trademark application, you will be sent a receipt via email – the approval process can take approximately 3 months.

3.  Check Trademark Status

  • What is it? While you will be informed via email or mail of any problems with your application or an approved Trademark, you may desire to check on your applications status.
  • When to do? From time to time.

4.  Additional Trademarks

  • What is it? As your company grows, or you want to further protect your name in other related industries, you may wish to file other trademarks.
  • When to do? At your discretion (or your attorney’s).
  • What do to?  Follow the procedures above.

5.  Trademark Monitoring

  • What is it? It is one thing to have a trademark, it is another thing to enforce it.  Again, the reason one gets a trademark is so that another entity cannot operate in their industry with similar goods or services under the same or a similar name.  Therefore, you should monitor the marketplace to make sure that trademark infringement is not taking place.
  • When to do? Perpetual.
  • What do to? There are a number of online trademark services.  We prefer Markify, which offers a complimenting FREE Trademark monitoring service for 1 Trademark – perfect for a startup.  If your lawyers are not using this, then you should let them know about it.
Trademark Search & Monitoring Markify

 

About Author Matt Faustman


Matt is the co-founder and CEO at UpCounsel. Matt believes in the power of online platforms to change antiquated ways of life and founded UpCounsel to make legal services efficiently accessible. He is responsible for our overall vision and growth of the UpCounsel platform. Before founding UpCounsel, Matt practiced as a startup and business attorney.

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